Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Darren Smyth, Nicola Searle, Eleonora Rosati, David Brophy, Alberto Bellan and Merpel, with contributions from Mark Schweizer. You're welcome to read, post comments and participate. You can email the Kats here

From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 8 February 2007

Back in early 2006 Mr Justice Pumfrey upheld the patent revocation claim brought by BlackBerry-maker Research in Motion Ltd (RIM) against Inpro & T-Mobile (see BAILII [2006] EWHC 70 Pat ). Yesterday the Court of Appeal (Lords Justices Tuckey, Jacob and Moore-Bick) dismissed Inpro and T-Mobile's appeal at [2007] EWCA Civ 51. The punchline was that a patent for software for a computing system that was concerned with how a small hand-held computer with a small display and limited battery life could access the internet was rightly considered to be invalid for obviousness in the face of three earlier pieces of prior art - including the delightfully named Mowser.

On a more techie level, the concept of Inpro's first claim was that of a proxy server between the field computer (eg the BlackBerry) and the internet; the field computer could send information about what it could display to the proxy, which in turn could transpose what it received from the internet into what could be displayed by the small field computer screen. The second claim was for the additional feature of text and image assembly within a single file in the proxy before it was sent to the field computer. Inpro complained that, when assessing the validity of these claims in terms of inventive step, he had misapplied the Windsurfing rules, especially since he failed to identify the differences between the prior art and the inventive concept of Inpro's claims in compliance with Windsurfing's question three.

"There are, we think, four steps which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention."]

The Court of Appeal didn't have any quarrel with Pumfrey J's analysis. The Court said, in short

* the first claim contained a general idea of a proxy to do the work. This was already disclosed by Mowser and the judges simply could could not see, at the most basic level, that tailoring the image so that it fitted the screen of the field computer was 'inventive' over Mowser (which already said that, since the size of the image could be reduced, you didn't need to be an inventor to make a smaller image that would fill the screen, Windsurfing applied.

* Pumfrey J looked at the second claim in the context of all the citations of prior art collectively. That was legitimate, since the feature was an idea that was independent of screen size-matching and there was no question of the addition of the two features being an inventive combination.

* The real issue was whether, given the idea of a proxy server, using it to combine files so that a single file was sent to the field computer was obvious - which it was.

The IPKat does wish that UK litigants would have this tendency to apply Windsurfing as though it was some special formula. The Windsurfing rule is not rocket science. In fact, it seems blindingly obvious in itself.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!